UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

August Term 2002

Argued: January 22, 2003 Decided: August 29, 2003

Docket No. 02-7312

- - - - - - - - - - - - - - - - - - - - - - - -THE ESTATE OF BURNE HOGARTH, BURNE HOGARTHDYNAMIC MEDIA WORLDWIDE LLC, MICHAEL HOGARTH, as the child of deceased author Burne Hogarth,RICHARD HOGARTH, as the child of the deceasedauthor Burne Hogarth and ROSS HOGARTH, as thechild of the deceased author Burne Hogarth,

Plaintiffs-Appellants,

v.

EDGAR RICE BURROUGHS, INC.,Defendant-Appellee.

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Before: NEWMAN, KATZMANN, and RAGGI, Circuit Judges.

Appeal from the March 21, 2002, judgment of the United States

District Court for the Southern District of New York (Denise L. Cote,

District Judge), rejecting claims of authorship of illustrator of two

pictorial versions of Tarzan books and ruling that both books were

works for hire, and also rejecting contract claims.

Affirmed.

Peter Herbert, Lankler Siffert & WohlLLP, New York, N.Y. (David B. Smallman,Steinhart & Falconer LLP, New York,N.Y., on the brief), for Plaintiffs-Appellants.

1Tarzan's prior appearances in this Court include Keller v. Lee,152 F.3d 918 (2d Cir. 1998) (table), Burroughs v. Metro-Goldwyn-Mayer,Inc., 683 F.2d 610 (2d Cir. 1982), and Burroughs v. Metro-Goldwyn-Mayer, Inc., 636 F.2d 1200 (2d Cir. 1980) (table).

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Roger L. Zissu, New York, N.Y. (Evan C.Gourvitz, Fross Zelnick Lehrman & Zissu,P.C., New York, N.Y., on the brief), forDefendant-Appellee.

JON O. NEWMAN, Circuit Judge.

Once again, Tarzan presents this Court with copyright issues.1

The issues, arising under the 1909 Copyright Act, Pub. L. No. 60-349;

35 Stat. 1075 (1909), codified at 17 U.S.C. § 24, et seq. (1976) ("1909

Act"), concern the work-for-hire doctrine as applied to an independent

contractor, the significance of incorrect information in applications

for registration filed with the Register of Copyrights, and laches.

The appeal also presents contract issues. The Plaintiffs-Appellants--

the Estate of Burne Hogarth, Burne Hogarth Dynamic Media Worldwide LLC,

and three of Hogarth's children (collectively "Hogarths")--appeal from

the March 21, 2002, judgment of the District Court for the Southern

District of New York (Denise L. Cote, District Judge) entered after a

bench trial. The District Court ruled in favor of the Defendant-

Appellee Edgar Rice Burroughs, Inc. ("ERB"), rejecting the Hogarths'

claims for a declaratory judgment that Burne Hogarth, a well known

illustrator, was the author of two books and as such entitled to

copyright in the original and renewal terms. The books are pictorial

versions of Tarzan of the Apes and of stories from Jungle Tales of

Tarzan (collectively "the Books"). The Hogarths claimed to have

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succeeded to Burne Hogarth's rights in the Books upon his death. The

Court also rejected the Hogarths' claim that they had a contract right

to receive a portion of licensing revenues paid to ERB by the Walt

Disney Company ("Disney") and a right to have some of Hogarth's

original artwork returned. We affirm.

Background

The facts are meticulously detailed in Judge Cote's comprehensive

opinion. Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., No. 00

CIV. 9569 (DLC), 2002 WL 398696 (S.D.N.Y. Mar. 15, 2002) ("Dist. Ct.

Op."). We recount only those facts necessary to understand and resolve

the issues on appeal. Applying the "clearly erroneous" standard of

review, we accept the District Court's findings of subsidiary facts,

except for those findings related to certain aspects of the steps taken

in the Office of the Register of Copyrights ("Copyright Office"). As

to these, we have been greatly aided by a response from Marybeth

Peters, Register of Copyrights ("Register"), to inquiries we submitted

to the Copyright Office after oral argument of the appeal. See Letter

of Marybeth Peters, Register of Copyrights, to Roseann MacKechnie,

Clerk, U.S. Court of Appeals for the Second Circuit (April 8, 2003)

("Peters Letter"). Our account of those steps will supplement and

slightly modify the District Court's account, but will not change any

of the Court's conclusions of law.

Creation of the Books. Edgar Rice Burroughs published Tarzan of

the Apes, the first of his 26 Tarzan novels, in 1912. Jungle Tales of

Tarzan was published in 1916-17. Both works are now in the public

2In this and all subsequent quotations from the District Court'sopinion, we have omitted the emphases supplied by Judge Cote in herquotation of the relevant documents.

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domain in the United States. Burroughs formed ERB in 1923 to manage

his literary rights.

In 1937, Burne Hogarth ("Hogarth") was hired by United Features

Syndicate, Inc. to illustrate the syndicated comic strip "Tarzan" and

continued this work until 1950. "During that time, he developed a

highly distinctive and still widely acclaimed style of illustrating

Tarzan and his universe." Dist. Ct. Op. at *2.

In the 1960s, Hogarth and Robert M. Hodes, then Vice President of

ERB, had discussions out of which emerged the idea of a new series of

Tarzan books. In July 1970, Hodes wrote to Hogarth, suggesting

production of "a quality, high priced edition of an adult version of

TARZAN OF THE APES in graphic form." Id. at *3 (quotation marks

omitted). In another letter, Hodes proposed terms for the project that

would provide the basis for the eventual agreement between ERB and

Hogarth. The letter stated:

1. We would commission you to produce the work at acost that would be paid one-half now and one-half out of thefirst proceeds of the book . . . . That one-half deferredpayment is the extent of your speculation, or risk.

2. We would undertake to find a U.S. publisher . . . .All expenses would be borne by us, and this, together withthe sum paid to you, would be our risk.

Id. at *4.2 Hogarth responded: "Your proposal sounds like a capital

idea." Id.

Later in 1970, ERB identified Watson-Guptill Publications, Inc.

("Watson-Guptill") as a likely publisher. This firm had previously

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published Hogarth's art instruction books. In proposing a contract

between ERB and Watson-Guptill, Hodes wrote the firm's editor, with a

copy to Hogarth:

1. Your contract is directly with [ERB]. We undertaketo provide the services of Burne Hogarth to furnish you withartwork and text for your proposed illustrated book ofTarzan of the Apes. . . .

2. You are responsible for designing and producing thebook, and, in general, supervising Mr. Hogarth's work. . . .We reserve the right to require all parties to produce abook that reasonably and substantially tells the story ofTarzan of the Apes as Edgar Rice Burroughs told that storyin his classic novel. . . . As for the artwork itself, wecannot and do not presume to influence or control the workof Mr. Hogarth.

Id.

The ERB-Hogarth Contract. In an agreement dated November 16, 1970

("1970 Agreement"), signed by Hogarth in 1971, ERB and Hogarth

established the terms for the creation of the first and subsequent

books. It included the following provisions:

[¶1] You [Hogarth] will create a book along the lineswe [ERB] have discussed with Watson-Guptill based uponapproximately one-half of Tarzan of the Apes . . . . Thecreative details will be worked out between you and ourpublisher.

[¶2] We will have the right to approve the content ofthe books, but our sole interest in this regard will be topreserve the Burroughs "flavor." We may give you ourartistic suggestions from time to time, but you will be thefinal judge of the artwork as distinguished from the storyor text.

[¶3] For all of your services and for all rights beinggranted, we will pay you, your estate [and] heirs . . . forthe term of the copyright, including renewals:

(a) $2,500 on January 1, 1971;(b) $2,500 on the completion of all your work; and(c) 50% of all net monies realized by us from the

exploitation of the book.. . .

[¶5] . . . You will create the subsequent books and weagree not to employ anybody else to create them. . . .

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. . .[¶7] We agree that the physical possession and

ownership of the original artwork shall be shared on thefollowing basis: We shall own the originals for the firstbook, you shall own them for the second book, we for thethird book, you for the fourth book and so on. We haveindicated to you that we desire the physical possession andownership of the foregoing artwork in order to place it inan Edgar Rice Burroughs Museum. . . .

[¶8] The book will be copyrighted in the name of [ERB]and we shall be the exclusive proprietors thereof, subjectalways to our obligation to pay you your participation. Youhereby grant us whatever rights we need to obtain thecopyright in our name and to extend and renew that copyrightwherever and whenever we can.

1970 Agreement; see also Dist. Ct. Op. at *5-*6.

In February 1972, ERB made an agreement with Watson-Guptill,

granting it worldwide English language hardcover publication rights in

the first book and the option to publish subsequent books. ERB

warranted that it was the "sole author and proprietor" of the first

book. Id. at *7.

The Books. The first book, published in 1972 ("the 1972 book"),

is 157 pages in length, of which 122 pages contain panels of color

illustrations and text, with one to four panels per page. The text is

a combination of narration and quotations of what the characters shown

on a panel are saying. The title page shows the title as "Tarzan of

the Apes" and credits the creators in these words:

BY BURNE HOGARTHOriginal text by Edgar Rice Burroughsadapted by Robert M. Hodes

The second book, published in 1976 ("the 1976 book"), is 157 pages

in length, of which 122 pages contains panels of black and white

illustrations and text, of a style similar to that of the 1972 book.

3As previously noted, the registrations for the original textversions of Tarzan of the Apes and Jungle Tales of Tarzan were filedbefore 1920, and these works are now in the public domain.

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The title page shows the title as "Jungle Tales of Tarzan" and credits

the creators in these words:

BY BURNE HOGARTHOriginal text by Edgar Rice Burroughsadapted by Burne Hogarth and Robert M. Hodes

Neither the 1972 nor the 1976 book enjoyed substantial sales.

The Copyright Registrations. The application for the original

term registration for the pictorial version of Tarzan of the Apes was

filed in 1973 by Watson-Guptill.3 It identifies as the claimant "Edgar

Rice Burroughs, Inc." and as the authors "Edgar Rice Burroughs . . .

(deceased)" and "(illustrated) by Burne Hogarth." In 1999, counsel for

ERB submitted an application for a supplementary registration, which

identifies the sole author as "Edgar Rice Burroughs, Inc.," and states

the explanation for the "correction" as "Work was one made for hire."

Three applications for renewal term registrations were submitted

for Tarzan of the Apes. On December 6, 2000, Danton Burroughs, on

behalf of ERB, submitted an application for a renewal registration

listing the author of renewable matter as "Edgar Rice Burroughs, Inc."

("first renewal application"). On December 8, 2000, counsel for

Hogarth's children submitted an application for a renewal registration

listing the author of renewable matter as "Burne Hogarth" ("second

renewal application"). On June 4, 2001, counsel for ERB submitted an

application for a renewal registration listing the author of renewable

4The certificate issued on the basis of this application modifiedthree entries. Within the blank headed "TITLE OF WORK IN WHICH RENEWALIS CLAIMED," which had stated "Tarzan of the Apes," was added "*byEdgar Rice Burroughs." Within the blank headed "AUTHOR(S) OF RENEWABLEMATTER," which had stated "Edgar Rice Burroughs, Inc.," was added "*illustrated by Burne Hogarth." Within the blank headed "RENEWABLEMATTER," the description was limited to "pictorial matter*." Thecertificate explains that items marked by an asterisk are "Amended byC.O. [Copyright Office] from original registration, limiting new matterto 'pictorial version.'"

5Although without consequence to our decision, some confusionremains concerning the replacement of the inadvertently processed third

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matter as "Edgar Rice Burroughs, Inc."4 ("third renewal application").

Counsel for ERB subsequently advised the Copyright Office that, at the

time of filing the third renewal application for ERB, he had been

unaware of the earlier filing of the first renewal application on

behalf of ERB.

The first renewal application was received by the Copyright Office

on December 15, 2000, and that date would in the normal course have

become the effective date. See 17 U.S.C. § 410(d) (effective date of

copyright registration is day on which application, deposit, and fee

are received). However, for reasons that the Register of Copyrights

cannot explain, the examiner handling the renewal claims processed the

third renewal application. See Peters Letter at 12-13. Reviewing its

records as a result of this Court's inquiry, the Copyright Office

concluded that the examiner should have processed the first renewal

application, rather than the later filed third renewal application.

The Copyright Office therefore issued a new certificate of renewal

registration with an effective date of December 15, 2000, and cancelled

the inadvertently processed third renewal registration.5

renewal application. The Register informs us that the Office issuedthe replacement certificate "using the earlier December 15, 2000application submitted by [ERB]." Peter's Letter at 13. However, thatapplication is dated December 6, 2000, and bears no handwrittensignature; the replacement certificate, sent to us by the Register,bears the handwritten signature of Danton Burroughs and the dateNovember 30, 2000. In any event, both the unsigned application filedby Danton Burroughs on December 6, 2000, and the signed applicationfiled by Danton Burroughs on November 30, 2000, list the author ofrenewable matter as "Edgar Rice Burroughs, Inc."

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The second renewal application was also received on December 15,

2000, and given a December 15, 2000, effective date. Thus, the

Copyright Office has two renewal registrations for Tarzan of the Apes

with an effective date of December 15, 2000, one identifying ERB as the

author and the claimant, and the other identifying Hogarth as the

author and Hogarth's children as the claimants.

The application for the original term registration for Jungle

Tales of Tarzan was filed by Watson-Guptill in 1976. It identifies as

the claimant "Edgard [sic] Rice Burroughs, Inc." and as the author

"Burne Hogarth." In 1979, Marion T. Burroughs, the daughter-in-law of

Edgar Rice Burroughs and an officer of ERB, filed an application for

a supplementary registration to make two changes to the original

registration. First, the misspelling "Edgard" in the name of the

claimant was corrected to "Edgar." Second, under the blank for

"AMPLIFIED INFORMATION," the application stated: "Add name of EDGAR

RICE BURROUGHS as author of original text. Citizenship: USA

(deceased)." The author was listed as "Burne Hogarth," as it had been

on the original application. In 1999, counsel for ERB filed an

application for a second supplementary registration to identify "Edgar

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Rice Burroughs, Inc." as the author instead of "Burne Hogarth." Under

"Explanation of Correction," this second application stated: "Work was

one made for hire."

No renewal application has yet been filed for Jungle Tales of

Tarzan because its renewal term will not begin until January 1, 2005,

28 years after the 1976 publication.

The ERB-Disney License. In an agreement dated April 1, 1994, ERB

licensed Disney to use the Tarzan character and stories in animated

movies and television programs ("Disney license" or "the license").

Paragraph 1(a) of the agreement defined the scope of the license to

include

the characters, plots, settings, themes, and incidentscontained in or suggested by all or any portion of thestories . . . written by Edgar Rice Burroughs, schedules ofwhich are attached hereto as Exhibit "A" and Exhibit "B."

Dist. Ct. Op. at *14. Exhibits A and B list the 25 Tarzan novels

written by Burroughs for which U.S. or Berne Convention copyright

protection existed in 1994. Id. Neither of the Books at issue in this

litigation are included in these exhibits. Id. at *26.

In paragraph 14(b)(ix) of the license, ERB warrants

(A) That, except as set forth in Exhibits "A" and "B," . . .to the best of [ERB's] knowledge, there are no other storiesauthorized by [ERB] or its predecessors in interest in whichthe TARZAN character appears. If there are any otherStories in which [ERB] has an interest, such stories shallbe deemed Stories hereunder to the extent of [ERB's] rightstherein, in any.

Id. at *15.

Disney released its Tarzan movie in 1999. Pursuant to the

license, Disney paid ERB $15 million, $12 million to buy out ERB's

6How ERB placed its work-for-hire contention before the DistrictCourt is not clear from the pleadings. ERB's answer does not assert,either as an affirmative defense or in a counterclaim, that the Bookswere works for hire. The answer includes, as an affirmative defense,that the Hogarths' claims to own exclusive rights in the renewal termsare barred "because, without regard to whether Hogarth's contributionsthereto were work for hire, the [Books] were created by Burroughs andHogarth as joint works under the U.S. copyright laws," presumablyreferring to the definition of "joint works" in the Copyright Act of

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share of Disney revenues from Tarzan merchandise and $3 million based

on box office receipts from the movie.

The Pending Litigation. Burne Hogarth died in 1996. In September

1999, two months after Disney's release of its Tarzan movie, counsel

for the Hogarth estate sent a cease-and-desist letter to Disney,

claiming that the movie infringed Burne Hogarth's copyrights in the

Books. Both Disney and ERB rejected the claim. The Hogarths then

brought the pending litigation, alleging three claims: (1) that Burne

Hogarth was the sole author of the Books and that his heirs are

entitled to the renewal term copyrights in the Books; (2) that the

Hogarths are entitled to a share of the proceeds ERB received from

Disney; and (3) that ERB breached paragraph 7 of the 1970 Agreement by

retaining possession of the original artwork for the 1972 Book but

failing to establish a museum for its display.

ERB's answer, denying the Hogarths' claims, contained no

counterclaim, but did include, in the prayer for relief, a request that

the Court declare "that [ERB] is owner of all copyright rights,

including the renewal copyrights" in the Books. By the time of the

trial, the District Court understood ERB to be contending, among other

things, that the Books were works for hire.6

1976, 17 U.S.C. § 101 (2000). That definition, referring to the"prepar[ation]" of a work "by two or more authors," is properlyunderstood to cover a work of co-authorship. See Childress v. Taylor,945 F.2d 500, 504 (2d Cir. 1991). At oral argument, however, bothsides disclaimed co-authorship.

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The District Court's Decision. After a bench trial in 2002, Judge

Cote rejected all of the Hogarths' claims. With respect to the

copyright claim, she ruled (1) that, although the copyright

registrations constituted prima facie evidence that Burne Hogarth was

the author, as stated in the registrations, the evidence established

that the registrations were not reliable, Dist. Ct. Op. at *18; (2)

that "[i]n the Second Circuit 'an independent contractor is an

"employee" and a hiring party is an "employer" for purposes of the

[1909 Act] if the work is made at the hiring party's instance and

expense,'" id. (citing Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549,

554 (2d Cir. 1995) (emphases deleted); (3) that the Books were created

at the "instance and expense" of ERB, id. at *19-*20; (4) that the

Books are works for hire, id. at *23; and (5) that ERB, as an employer

in the case of works made for hire, is the "author" for purposes of the

1909 Act and entitled to the copyrights in the original and renewal

terms, id. at *18-*24.

With respect to the Hogarths' laches defense, Judge Cote ruled

that, although the registrations listing Burne Hogarth as the author

remained uncorrected for many years, the existence of incorrect

registrations alone did not establish a laches defense and that ERB had

promptly acted to assert its copyright claims as soon as adversity

developed between the Hogarths and ERB. Id. at *24-*25. With respect

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to the Hogarths' contract claims, Judge Cote ruled that the Disney

license gave Disney only the right to use the character Tarzan and the

stories listed in Appendix A and Appendix B of the license, and not any

rights with respect to the Books. Id. at *25-*27. The Court also ruled

and that, even if Disney acquired rights in the Books, the 1970

Agreement did not give Hogarth any right to revenue received by ERB by

virtue of the Disney license, id. at *28-*29. Finally, as to the

Hogarths' claim concerning original artwork, Judge Cote ruled that ERB

had not promised to build a museum to house Hogarth's drawings and had

not breached the clause of the 1970 Agreement concerning original

artwork. Id. at *29.

The District Court's judgment denies all of the Hogarths' claims,

but neither grants nor denies the request in ERB's answer for a

declaration that it owns all copyrights, including renewal copyrights

in the Books.

Discussion

I. Copyright Claim

A. Work for Hire and the Renewal Term

Two concepts of copyright law under the 1909 Act are at issue on

this appeal--a work made for hire and the renewal term. The 1909 Act

provides no definition of "work made for hire," but it states the

consequence of that designation. "[T]he word 'author' shall include an

employer in the case of works made for hire." 1909 Act § 26. Thus,

with respect to works made for hire, the employer is legally regarded

as the "author," as distinguished from the creator of the work, whom

7The 1976 Act replaced the renewal term of the 1909 Act with a newprovision, applicable to "any work other than a work made for hire,"permitting termination of "the exclusive or nonexclusive grant of atransfer or license of copyright or of any right under a copyright,executed by the author on or after January 1, 1978," 17 U.S.C.§ 203(a), within "a period of five years beginning at the end ofthirty-five years from the date of execution of the grant," id.§ 203(a)(3). The legislative history explains:

[The termination provision is] based on the premise that thereversionary provisions of [section 24 of the 1909 Act]should be eliminated, and that [the 1976 Act] shouldsubstitute for them a provision safeguarding authors againstunremunerative transfers. A provision of this sort isneeded because of the unequal bargaining position ofauthors, resulting in part from the impossibility ofdetermining a work's value until it has been exploited.

H.R. Rep. No. 94-1476, at 124 (1976), reprinted in 1976 U.S.C.C.A.N.5659, 5740.

8The duration of the renewal term was extended to 47 years by the1976 Act, 17 U.S.C. § 304(a)(1)(C) (1982), and to 67 years by the Sonny

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Learned Hand referred to as "the 'author' in the colloquial sense."

Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697, 699 (2d Cir. 1941).

The concept of a "work made for hire" remains in the Copyright Act of

1976, 17 U.S.C. § 101 et seq. (2000) ("1976 Act"), which defines the

phrase to mean "a work prepared by an employee within the scope of his

or her employment" or, for certain types of works, "a work specially

ordered or commissioned." 17 U.S.C. § 101 (2000); see Community for

Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989) ("CCNV").

The second concept--the renewal term--is a distinctive feature of

the 1909 Act, not carried into the 1976 Act for works created on or

after January 1, 1978, see 17 U.S.C. § 302(a) (establishing single

copyright term).7 As enacted, the 1909 Act authorized an original term

of 28 years and a renewal term of an additional 28 years,8 if

Bono Copyright Term Extension Act, 17 U.S.C. § 304(a)(1)(C) (2000). SeeNimmer on Copyright § 9.11[A]-[B] (2003).

9The Copyright Renewal Act of 1992, Pub. L. No. 102-307, 106 Stat.264, codified at 17 U.S.C. § 304(a)(2)(A)(ii), provides for automaticextension, but also provides advantages for claiming renewal within oneyear of the expiration of the original term. Id. at § 304(a)(2)(A)(i).

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application for the renewal term was made "within one year prior to the

expiration of the original term."9 1909 Act § 24. An important aspect

of the renewal term is that, although it is assignable by the author,

see Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 647-59

(1943), the assignment of the "expectancy" in acquiring the renewal

term, see Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373,

375 (1960), is voided by the author's death prior to the date when the

renewal term vests, see 1909 Act § 24; Miller Music, 362 U.S. at 374-

78. In that event, the renewal right belongs to the author's surviving

spouse or children, if living, or, if they are not living, to the

author's executor. See 1909 Act § 24; Miller Music, 362 U.S. at 376.

However, in the case of a work made for hire, the proprietor of the

copyright in the original term, i.e., the employer or its assignee, is

entitled to the renewal term. 1909 Act § 24.

In the pending litigation, the concepts of a work made for hire

and the renewal term are at issue concerning a work claimed to be

"commissioned." ERB makes no claim that Burne Hogarth was its

employee. Instead, ERB contends that Hogarth was an independent

contractor whom ERB commissioned to create original artwork for the

Books under circumstances that render the Books works for hire under

the case law of this Circuit. This claim raises the issue of whether

10Judge Katzmann does not join this part of the opinion because hebelieves it is not necessary to the decision we reach in this appeal.

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a commissioned work should be considered a work for hire under the 1909

Act, in which event the right to obtain the renewal term belongs to the

commissioning party, or whether that right remains with the

commissioned party, absent an assignment to the contrary. In the

pending case, where the commissioned party, Burne Hogarth, assigned to

the commissioning party, ERB, his renewal right (technically, the

“expectancy” in acquiring the renewal term, see Miller Music Corp., 362

U.S. at 375), see 1970 Agreement, ¶8, and then died before the renewal

term vested, the issue of whether the Books are works for hire is

critical because, if they are not, Hogarth’s death during the original

term would leave the renewal right with his children. See 1909 Act

§ 24; Miller Music, 362 U.S. at 374-78.

Commissioned works under the 1909 Act.10 In a series of cases

decided over more than sixty years, this Court has considered the

status of commissioned works under the 1909 Act, with respect to both

the original copyright term and the renewal term. In the process, we

have developed what the Fifth Circuit describes as “an almost

irrebut[t]able presumption that any person who paid another to create

a copyrightable work was the statutory ‘author’ under the ‘work for

hire’ doctrine.” Easter Seal Society for Crippled Children and Adults

of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323, 327 (5th Cir.

1987) (reviewing relevant Second Circuit cases).

Our Court first recognized a “presumption” in favor of a

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commissioning party in 1939 in Yardley v. Houghton Mifflin Co., 108

F.2d 28 (2d Cir. 1939), a case involving an artist who had been

commissioned by the City of New York to paint a mural. The artist had

died before the expiration of the copyright's original term, and his

sister claimed to own a copyright for the original term by virtue of

an assignment from her brother's executor. In addition, the sister had

filed for and obtained a registration for the copyright's renewal term.

Focusing on the original term, we ruled that, although the

contract commissioning the artist’s work was silent as to which party

would hold the copyright, and although the artist had included a

copyright notice in his favor on the painting, this term belonged to

the City because it had commissioned the artist to paint the mural. Id.

at 30-32. In so holding, we adopted a “presumption” that the

commissioning party "desires to control the publication of copies" of

the commissioned work and that the artist "consents" to such control

in the absence of a contract to the contrary. Id. at 31. Our

conclusion that the artist “consents” to his patron’s right to control

reproduction of the commissioned work, coupled with the absence of any

reference to the work as a “work for hire,” may have been intended to

reflect a conclusion that the copyright for the original term and the

expectancy of a copyright for the renewal term were transferred by the

artist to the patron by an implied assignment, in which event the

artist ’s heirs or executor would retain renewal rights if the artist

11It is possible that the implied assignment rationale of Yardleyapplied only to the original term of the copyright, in which event theexecutor would have been entitled to apply for the renewal term becausethe right to the expectancy in the renewal term, if not impliedlyassigned, would have remained the property of the decedent. Whetherthe executor was entitled to apply for the renewal right because theexpectancy in the renewal right was deemed to be within the scope ofthe implied assignment and then voided by the death of the artistduring the original term, or because that expectancy was deemed notwithin the scope of the implied assignment, Yardley’s use of an impliedassignment rationale strongly indicates that the work was not regardedas a work for hire. The important point is that the commissioningparty was not entitled to the renewal right.

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died before the renewal term vested.11

Some support for this conclusion can be drawn from our rejection

of the sister’s renewal claim on the ground that “only [the artist’s]

executor could legally obtain a renewal.” Id. at 32 (citing Fox Film

Corp. v. Knowles, 216 U.S. 326 (1923)). Presumably, if we had regarded

the mural as a work for hire, the commissioning party would have been

deemed in law the author and, as such, would have been entitled to the

copyright for both the original and the renewal terms, regardless of

whether the artist had died during the original term. See Shapiro,

Bernstein, 123 F.2d at 699-700; Tobani v. Carl Fisher, Inc., 98 F.2d

57, 59-60 (2d Cir. 1938). On the other hand, because the sister had

conceded that only the executor “could legally obtain a renewal,”

Yardley, 108 F.2d at 32, we had no occasion to consider the effect, if

any, of the Yardley presumption on a renewal right dispute between the

executor and the City.

We seemed to resolve the question of renewal rights in

commissioned works in 1955, when we considered a work (song lyrics)

created "as a special job assignment, outside the line of [the

12The creator of the lyrics in Vogel Music II was in fact anemployee of the company that had contracted with him, but the lyricswere created "as a special job assignment, outside the line of hisregular duties." Vogel Music II, 221 F.2d at 570.

-19-

lyricist's] regular duties" for his employer. Shapiro, Bernstein & Co.

v. Jerry Vogel Music Co., 221 F.2d 569, 570 (2d Cir.), modified on

other grounds, 223 F.2d 252 (2d Cir. 1955) ("Vogel Music II").12 The

District Court had found that the employer paid the lyricist $25 "for

the lyric and his rights therein." Shapiro, Bernstein & Co. v. Jerry

Vogel Music Co., 115 F. Supp. 754, 757 (S.D.N.Y. 1953) ("Vogel Music

I"). We ruled that the lyricist's right to the copyright for the

original term "passed to [the employer] under [the lyricist's] original

contract with [the employer] to write a lyric." Vogel Music II, 221

F.2d at 570. But we also ruled that the lyricist retained his right

to the renewal term (until he subsequently assigned that right to a

third party). Id. Although we did not amplify this conclusion, the

District Court had explained: "Since [the lyricist] was not [the

employer's] employee for hire, [the employer] had no renewal interest

in the [lyricist's] lyric." Vogel Music I, 115 F. Supp. at 760.

Ten years later, in Brattleboro Publishing Co. v. Winmill

Publishing Corp., 369 F.2d 565 (2d Cir. 1966), we “merged” the Yardley

presumption into the work-for-hire doctrine, as the Fifth Circuit

characterized our approach, see Easter Seal Society, 815 F.2d at 326,

thereby laying the foundation for the law as it now stands in this

Circuit. Brattleboro concerned a claim of copyright infringement

during the original term brought by merchants who had requested a

13Brattleboro involved a somewhat unusual context for a dispute asto a commissioned work. Normally, the party claiming to havecommissioned a work is a large entity that publishes numerous works andthe party claiming to hold the renewal term is an individual whocreated the work. In Brattleboro, however, the individual advertisingmerchants commissioned the works, and the newspaper created them. Thisreversal of the usual roles might have influenced the outcome: theCourt characterized the commissioning parties as "small merchants" who"were naive with respect to the complex provisions of the copyright

-20-

newspaper to design and publish advertisements. In ruling that the

merchants were entitled to copyrights in their ads, we, for the first

time, explicitly applied to "independent contractors," 369 F.2d at 568,

i.e., the newspaper, the "instance and expense" standard that had

previously been used for determining when an employee's work should be

deemed to be a work for hire, which would result in the employer's

right to the copyright for both the original and the renewal term. Id.

at 567-68 (citing Nimmer on Copyright 238 (1964)). Brattleboro, like

Yardley, did not refer to the works, i.e., the ads, as works for hire.

But Brattleboro, unlike Yardley, did identify the work-for-hire

doctrine as “the grounds” for the Court’s disposition. Id. at 567.

After reviewing the principles applicable to work-for-hire claims,

Brattleboro specifically observed: “We see no sound reason why these

same principles are not applicable when the parties bear the

relationship of employer and independent contractor.” Id.; see Easter

Seal Society, 815 F.2d at 326 (describing cited language as

Brattleboro’s “critical twist” on established work-for-hire doctrine).

Although we had no occasion in Brattleboro to consider the parties’

rights in a copyright for the renewal term, the cited language, if not

the facts in Brattleboro,13 provided support for our subsequent holding

law." Brattleboro, 369 F.2d at 568.

14The Court's review of the earlier decisions can be viewed assomewhat overstating their language. First, the Court characterizedBrattleboro as having "expressly applied the statutory work for hiredoctrine to the case of an independent contractor." Picture Music, 457F.2d at 1216. In fact, what Brattleboro had done was apply the"instance and expense" test to determine that a party commissioned tocreate a work should be deemed to have assigned its copyright for theoriginal term to the commissioning party. Brattleboro never classifiedthe work as a work for hire, although it did say that the work-for-hire"principles" were applicable to a commissioned work. Second, inPicture Music, the Court stated that Yardley "held that one whocommissions an artist to paint a mural owns all rights to itsreproduction." Id. (emphasis added). In fact, Yardley had recognizedthat the executor of the deceased artist, not the commissioning party,held the renewal right.

-21-

in Picture Music, Inc. v. Bourne, Inc. 457 F.2d 1213 (2d Cir. 1972).

Picture Music involved a song-writer who was asked by a music

publisher to adapt music and one line of a lyric from an animated movie

into a new song. For her efforts she received a percentage of song

royalties. She claimed an interest in the renewal term of the

copyright in the song. In rejecting her claim, this Court ruled that

the songwriter had acted "in the capacity of an independent

contractor"; that the music publisher and the creator of the movie were

the "'motivating factors'" in the composition of the new song; that

they had the power to "accept, reject, or modify" the song; and that

these circumstances rendered the song a work for hire. Id. at 1217.

Somewhat extending this Court's earlier decisions,14 Picture Music

stated that the "instance and expense" test, which had previously been

used to identify an employee's work as a work for hire and to deem a

commissioned party to have assigned to the commissioning party a

copyright for the original term, would now be used to determine whether

-22-

a commissioned work was a work for hire, thereby entitling the

commissioning party to the renewal term in addition to the original

term. Rejecting a distinction between an employee and an independent

contractor as long as the "instance and expense" test was satisfied,

the Court stated that "the purpose of the [1909 Act] is not to be

frustrated by conceptualistic formulations of the employment [sic]

relationship," id. at 1216, and concluded: "That [the song-writer]

acted in the capacity of an independent contractor does not preclude

a finding that the song was done for hire." Id. at 1217.

The Court's willingness to treat a commissioned work as a work for

hire might have resulted from the way the case was presented on appeal.

Although the appellant contended that the song was not a work for hire,

its brief did not cite, much less discuss, the decisions in Yardley,

Vogel Music II, or Brattleboro. After the decision in Picture Music,

Professor Melville Nimmer entered the fray, filing a rehearing petition

that discussed our earlier commissioned work decisions and reminded the

Court that its prior decision in Yardley had left the renewal term in

a commissioned work with the executor of the estate of the work's

creator. Apparently, his argument came too late; the rehearing

petition was denied without comment. See Picture Music, Inc. v. Bourne,

Inc., No. 71-1222 (2d Cir. May 25, 1972) (denying petition for

rehearing). The Supreme Court also denied Prof. Nimmer’s petition for

certiorari, with only Justice Douglas dissenting. Picture Music, Inc.

v. Bourne, Inc., 409 U.S. 997 (1972).

By the time we next encountered a commissioned work, in 1995,

15Playboy acknowledged that "[u]ntil the mid-1960's, federalcourts applied the work-for-hire doctrine only to cases in which atraditional employer/employee relationship existed between the hiringparty and the creator of the work," 53 F.3d at 554, and cited the NinthCircuit's decision in Lin-brook Builders Hardware v. Gertler, 352 F.2d298, 300 (9th Cir. 1965), as the first case to apply the doctrine toa commissioned work. Playboy, 53 F.3d at 554. Playboy repeated theoverstatement in Picture Music that Brattleboro had "held" that a partycommissioning a work at its instance and expense is an "employer" forpurposes of the 1909 Act. Id. See footnote 11, supra.

-23-

Picture Music had carried the day, and we relied on it and its

expansive reading of Brattleboro to hold that, as long as the "instance

and expense" test is met, the work is a work for hire, and the party

commissioning the work is regarded as the "author," entitled to all

rights of copyright. See Playboy Enterprises, Inc. v. Dumas, 53 F.3d

549, 553-55 (2d Cir. 1995).15

Significance of CCNV. Whatever questions might be raised about

the law’s progression in this Circuit from Yardley through Picture

Music, we would normally be obliged to follow Picture Music, especially

after its holding was reconfirmed in Playboy. We are given pause,

however, by language in the Supreme Court's opinion in CCNV. CCNV

concerned the work-for-hire provision of the 1976 Act. That Act

defines a work for hire as:

(1) a work prepared by an employee within the scope ofhis or her employment; or

(2) a work specially ordered or commissioned for [anyof nine specified uses] if the parties expressly agree in awritten instrument signed by them that the work shall beconsidered a work made for hire.

17 U.S.C. § 101. CCNV stated that to determine whether a work is a

work for hire under the 1976 Act, "a court should first ascertain,

using principles of general common law of agency, whether the work was

-24-

prepared by an employee or an independent contractor" and then apply

the appropriate subsection of the 1976 Act's definition. 490 U.S. at

750-51. The Court rejected the contention that Congress, in enacting

the 1976 Act, had intended to incorporate commissioned work cases

decided under the 1909 Act such as Picture Music and Brattleboro, which

the Court characterized as "holding that an employment relationship

exists sufficient to give the hiring party copyright ownership whenever

that party has the right to control or supervise the artist's work."

Id. at 748. Although ruling that the approach of these cases was not

applicable to cases governed by the 1976 Act, the Court had no occasion

to rule as to their continued viability for cases still governed by the

1909 Act.

However, in recounting the history of the work-for-hire doctrine

under the 1909 Act, the Court explained that, as to commissioned works,

courts of appeals "generally presumed that the commissioned party had

impliedly agreed to convey the copyright, along with the work itself,

to the hiring party." Id. at 744. For this account, CCNV cited our

decisions in Yardley and Vogel Music II. Id. By emphasizing our early

cases' reliance on an implied agreement between the commissioning and

the commissioned parties, this account could be read to confirm the

view of Vogel Music II that a commissioned work is not a work for hire

and to support an interpretation of Yardley that, upon the death of the

commissioned party during the original term, the right to obtain the

renewal term belongs to his executor (if no spouse or child survives)

either because the renewal right was not impliedly assigned or, if

16After quoting in italics the statement from CCNV recountinglower courts' use of an implied assignment theory as the basis fortransfer of copyright by a commissioned party, the Nimmer treatisestates:

The effect of the italicized sentence is that the hiringparty owns a commissioned work created under the 1909 Actvia assignment, not as its initial proprietor. The right torenew such a work, in the first instance, should thereforerevert to that author rather than vesting automatically inthe hiring party. To that extent, the holding of PictureMusic becomes untenable.

3 Nimmer § 9.03[D], at 9-28.4.

-25-

impliedly assigned, such assignment is voided by his death before the

vesting of the renewal term. The argument would be that, since with

a true work for hire, copyright ownership and the right to obtain the

renewal term are with the employer automatically upon the employee's

creation of the work, the Court's reference to the commissioned party's

implied agreement to convey the copyright reflects a view that the

commissioning party does not have the right to obtain a renewal term

if the creator dies before the term vests. Interestingly, the Nimmer

treatise takes this precise message from Justice Marshall's opinion in

CCNV. See Nimmer § 9.03[D], at 9-28.4.16 Our issue thus becomes whether

to adhere to the clear holdings of Picture Music and Playboy or reject

them on the basis of the language used in CCNV to describe our Court's

earlier treatment of commissioned works under the 1909 Act.

Although the content of a Supreme Court opinion can provide a

basis that permits us to reject a precedent of this Court without the

need for in banc reconsideration, see Gerosa v. Savasta & Co., Inc.,

329 F.3d 317, 326-28 (2d Cir. 2003) (circuit precedent rejected by

-26-

panel because of reasoning in intervening Supreme Court opinion);

Boothe v. Hammock, 605 F.2d 661, 663-64 (2d Cir. 1979) (same), we

conclude that the language in CCNV is an insufficient basis to warrant

a panel’s disregard of two clear holdings of this Court. CCNV was not

concerned with the status of commissioned works under the 1909 Act.

The language that mentions such works is a brief historical account.

Indeed, in Playboy, our own Court acknowledged the same history, noting

that “[u]ntil the mid-1960's, federal courts applied the works-for-hire

doctrine only to cases in which a traditional employer/employee

relationship existed between the hiring party and the creator of the

work.” 53 F.3d at 554. But, as we also noted in Playboy, Lin-brook

Builders Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir. 1965), became

the first case to extend the work-for-hire doctrine to commissioned

works. Playboy, 53 F.3d at 554. After Picture Music, the doctrine was

similarly extended in Murray v. Gelderman, 566 F.2d 1307, 1310 (5th

Cir. 1978), and Real Estate Data, Inc. v. Sidwell Co., 907 F.2d 770,

773 (7th Cir. 1990). In sum, because we agree with Judge Gee’s

observation in Easter Seal Society that any distinction in the case law

under the 1909 Act between employees and independent contractors "was

erased long before the 1976 Act’s arrival,” Easter Seal Society, 815

F.2d at 330 n.13, we conclude that the historical review in CCNV, if

dictum at all, is dictum of a weak variety, and not grounds to relieve

us from our obligation to follow Picture Music and Playboy.

The Hogarths' copyright claim therefore turns on whether they can

successfully challenge either the District Court's ultimate conclusion

-27-

that the Books were created at the "instance and expense" of ERB or the

factual findings that underlie this conclusion.

Application of the "instance and expense" test. The Hogarths

challenge to the District Court's conclusion that the Books were

created at the "instance and expense" of ERB, as those terms have been

used in this Circuit to determine copyright ownership of commissioned

works, see Playboy, 53 F.3d at 553-56; Picture Music, 457 F.2d at 1216;

Brattleboro, 369 F.2d at 567-68, is essentially a dispute about the

facts. Judge Cote carefully considered the evidence and made precise

findings to support her conclusion that the Books were created at the

instance and expense of ERB. See Dist. Ct. Op. at *18-*24. We see no

basis for disturbing her findings or her conclusions. Furthermore, as

the District Court suggested, id. at *19, *24, the Books are derivative

works based on original works for which ERB held the copyrights, and

we ruled in Picture Music that in such circumstances the copyright

proprietor has the right to "'direct and supervise'" the work of the

commissioned party, sufficient to render it a work for hire, Picture

Music, 457 F.2d at 1216 (quoting Donaldson Publishing Co. v. Bregman,

Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir. 1967)).

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B. Timeliness

The Hogarths contend that ERB is barred from claiming to be the

author of the Books pursuant to the work-for-hire doctrine because of

the statute of limitations, laches, and equitable estoppel.

Statute of limitations. Civil actions seeking copyright remedies

are barred unless "commenced within three years after the claim

accrued." 17 U.S.C. § 507(b). "A cause of action accrues when a

plaintiff knows or has reason to know of the injury upon which the

claim is premised." Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996).

The Hogarths contend that ERB's "work-for-hire" claim is time-barred

because it "accrued when [ERB] had notice of the contents of the

copyright registration certificates identifying Hogarth as author of

the Books in the 1970's." Brief for Appellants at 23-24.

The initial obstacle to the limitations defense is that ERB has

not made a "claim" to which even a valid limitations defense could be

asserted by the Hogarths. ERB did not file a counterclaim. As the

issues were presented to the District Court for trial, ERB's work-for-

hire contention was a defense to the Hogarths' claim for renewal

rights. A defendant who is not seeking any affirmative relief and who

asserts a defense only to defeat a plaintiff's claim is not barred by

a statute of limitations. See United States v. Western Pacific R.R.

Co., 352 U.S. 59, 72 (1956) ("To use the statute of limitations to cut

off the consideration of a particular defense in the case is quite

foreign to the policy of preventing the commencement of stale

litigation."); Luckenbach Steamship Co. v. United States, 312 F.2d

17The judgment denied the Hogarths' claim that Burne Hogarth isthe sole author of the Books and denied their claim that they aresuccessors to the copyright renewal terms. It did not make anydeclaration of ERB's rights.

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545, 548-51, 552 n.3 (2d Cir. 1963) ("The law is well settled that

limitations do not normally run against a defense."); 133-24 Sanford

Avenue Realty Corp. v. Cisneros, 940 F. Supp. 83, 85 (S.D.N.Y. 1996)

("It is well established that statutes of limitations run against

affirmative claims for relief, but not against defenses."). Even if

circumstances had existed when Watson-Guptill filed applications for

registration in the 1970s that would have entitled ERB to seek a

declaration of non-liability against a claim by Burne Hogarth, ERB

would not have been obliged to seek such declaratory relief. Potential

defendants are not required to seek at the earliest opportunity a

declaration that a defense to a claim not yet brought is valid.

Arguably, ERB's inclusion, in the prayer for relief of its answer,

of a request for a declaration that ERB owns all copyright rights in

the Books functions as a counterclaim against which the Hogarths'

limitation defense can be asserted. But the District Court apparently

did not understand ERB to be asserting a counterclaim, and the judgment

does not adjudicate one.17 Moreover, even if ERB had filed a time-

barred counterclaim, the statute of limitations would not have

prevented ERB from asserting its affirmative defense to the Hogarths'

claim. See Delaware Chemicals, Inc. v. Reichhold Chemicals, Inc., 35

Del. Ch. 493, 503, 121 A.2d 913, 918 (1956) (dismissing counterclaims

as time-barred but permitting counter-claimant to seek leave to amend

18Our Court has not decided whether a copyright ownership claimaccrues solely upon an adverse party's filing of a registrationreflecting ownership incompatible with that of the claimant. InMerchant, we upheld a jury's determination that a claim of co-authorship had accrued when the alleged co-authors reached the age ofmajority. 92 F.3d at 56. The critical circumstance bearing on accrualin Merchant was not that a certificate of registration, omitting theclaimants as co-authors, had been issued prior to the claimants'reaching the age of majority; it was the claimants' knowledge that theywere not receiving royalties to which they believed themselvesentitled. Id. at 53 ("The jury also found . . . that the only periodduring which Plaintiffs did not know, and could not have known with theexercise of reasonable diligence, that royalties to which they wereentitled had accrued lasted from 1955 to 1961, while Plaintiffs wereunderage.") (emphasis added). In Stone v. Williams, 970 F.2d 1043 (2dCir. 1992), we ruled that the claim of an author's daughter accruedwhen she was put on notice that "she might be the child of [a wellknown singer], and she knew then that she was receiving no money as aresult of such relationship." Id. at 1049. As in Merchant, accrualoccurred when the claimant became aware that she had sustained theinjury of not receiving royalties. Margo v. Weiss, 213 F.3d 55 (2dCir. 2000) (applying Merchant), likewise concluded that a co-authorshipclaim concerning a song written in 1961 accrued when the claimant knewor should have known of the grounds for the claim, id. at 60. However,because the Court ruled that the plaintiffs knew of the grounds fortheir claim no later than 1992, id. at 61, more than three years beforetheir complaint was filed in 1966, the Court must have thought thataccrual could have occurred in 1992 by reason of events happening longafter the plaintiffs made their alleged contribution to the song'screation.

-30-

to assert the counterclaims defensively).

We need not rest solely on the pleadings, however, because the

limitations defense lacks merit. Contrary to the Hogarths' contention,

ERB's claim to copyright interests in the Books did not accrue in the

1970s when the applications for registrations were filed. Even if the

filing of an application for registration by an adverse party could

start a limitations period, a matter we do not decide,18 a party cannot

be held to have started the limitations period for assertion of its

copyright claims by filing its own applications for registration, no

-31-

matter how erroneous. Recognizing that ERB's work-for-hire "claim"

cannot accrue until it has suffered some injury, the Hogarths contended

in the District Court that ERB suffered a "self-inflicted injury."

Dist. Ct. Op. at *24. Not surprisingly, there is no authority for such

a contention. The district court cases in which a claimant has been

time-barred from asserting claims contrary to the information disclosed

in a copyright registration involve applications for registrations

filed by a party with interests adverse to those of the claimant. See

Carell v. Shubert Organization, Inc., 104 F. Supp. 2d 236, 249

(S.D.N.Y. 2000); Willsea v. Theis, No. 98 Civ. 6773 (BSJ), 1999 WL

595629, at *5 (S.D.N.Y. Aug. 6, 1999); see also Netzer v. Continuity

Graphic Associates, Inc., 963 F. Supp. 1308, 1315-16 (S.D.N.Y. 1997)

(copyright ownership claim accrued when claimant received comic book

with copyright notice identifying adverse party as copyright

proprietor).

In the pending case, as the District Court ruled, the injury to

ERB "came at the earliest in 1999, when Hogarth's heirs asserted an

undefined copyright claim in their letter to Disney." Dist. Ct. Op. at

*24. The statute of limitations does not bar ERB from defending on the

ground that the Books are works for hire.

Laches and equitable estoppel. The District Court correctly ruled

that ERB is not barred from asserting its defense because of laches or

equitable estoppel. Id. at *25. The Hogarths presented no evidence of

reliance to their detriment arising from the registrations or from any

other action taken by ERB. See Ivani Contracting Corp. v. City of New

19Since Burroughs had died before the pictorial version of Tarzanof the Apes was created, he could not have been a co-author of any ofthe new material in this derivative work, and only such new materialwas entitled to a copyright. See Durham Industries, Inc. v. Tomy Corp.,630 F.2d 905, 909 & n.6 (2d Cir. 1980). The Register has noted thatsince the new matter is identified in the registration as "BurneHogarth's pictorial version of Edgar Rice Burroughs' novel," theregistration should be understood to have identified only Burne Hogarthas the author of the new matter and to have identified Edgar RiceBurroughs as the author of the underlying work. Peters Letter at 9.

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York, 103 F.3d 257, 259 (2d Cir. 1997) (laches defense unavailable in

absence of prejudice); General Electric Capital Corp. v. Eva Armadora,

S.A., 37 F.3d 41, 45 (2d Cir. 1994) (equitable estoppel requires, among

other things, reliance on misrepresentations causing change of position

by innocent party).

C. Effect of Registrations

The Hogarths contend that the registrations for the Books that

became effective in the 1970s created a presumption that Burne Hogarth

was the author and that ERB has not overcome this presumption. Section

209 of the 1909 Act provides that the Register's certificate of

registration "shall be admitted in any court as prima facie evidence

of the facts stated therein." The 1973 application for registration

of Tarzan of the Apes, filed by Watson-Guptill, identified the authors

as "Edgar Rice Burroughs (deceased)" and "(illustrated) by Burne

Hogarth."19 The 1976 application for registration of Jungle Tales of

Tarzan, also filed by Watson-Guptill, identified the author as "Burne

Hogarth." ERB did not fully correct these registrations until 1999,

when it filed applications for supplemental registrations identifying

20The 1976 Act provides that "the certificate of a registrationmade before or within five years after first publication of the workshall constitute prima facie evidence . . . of the facts stated in thecertificate" and that "[t]he evidentiary weight to be accorded thecertificate of a registration made thereafter shall be within thediscretion of the court." 17 U.S.C. § 410(c).

21ERB seeks to minimize the significance of the listing of BurneHogarth as co-author or author of the Books by pointing out that theRegister's instructions applicable to registrations for the renewalterm under the 1909 Act state, "The term 'author' does not includeemployers for hire." Letter of Roger L. Zissu, Esq. to Roseann B.MacKechnie, Clerk, U.S. Court of Appeals for the Second Circuit (May1, 2003) (enclosing Compendium of Copyright Practices, Compendium I§ 11.7.1(II)(a)). ERB argues that including an employer as an authorin the case of a work for hire under the 1909 Act and not includingsuch an employer as an author for purposes of the renewal term createsan "inconsistency" that "illustrates the difficulty for a lay person,or even a lawyer, in preparing applications and understanding theevolving work for hire doctrine." Id. We are not persuaded that lawyersare entitled to be so easily confused between a provision concerningthe original term and one concerning the renewal term.

-33-

ERB as author on the basis of work for hire.20 In 2000, conflicting

applications for registrations for the renewal term for Tarzan of the

Apes were filed by ERB and by the Hogarths. ERB's initial renewal

application listed "Edgar Rice Burroughs, Inc." as the author (on a

work-for-hire theory), and the Hogarths' application listed Burne

Hogarth as the author.

The application forms on which Watson-Guptill applied for

registration of a copyright for both of the Books stated: "Where a work

was made for hire, the employer is the author." The Hogarths contend

that, in light of this explicit instruction, the omission of ERB as

"author" on the applications filed by Watson-Guptill resulted in

registration certificates in effect "disclaiming 'employer for hire'

status for ERB."21 Brief for Appellants at 36.

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As the Register's letter to this Court explains, however, the

Copyright Office's examination of copyright applications is

"necessarily limited," Peters Letter at 4, and should be "distinguished

from the Patent and Trademark Office's process for issuance of

patents," id. at 3-4. "[T]he Office does not make factual

determinations with respect to publication or any other act done

outside of the Office" and "will register adverse claims by more than

one party," id. at 4, which are "not unusual," id. at 14. Commenting

on ERB's application for supplementary registration, filed in 1999,

which identified ERB as the author of Tarzan of the Apes on a work-for-

hire theory, the Register's letter also points out that it is not

unusual for correcting information to be submitted at any time during

the original term. Peters Letter at 10.

The Register's letter specifically endorses the following passage

from Judge Cote's opinion concerning the significance of the

registrations:

"[A] certificate of registration creates no irrebuttablepresumption of copyright validity. Extending a presumptionof validity to a certificate of copyright merely orders theburdens of proof." Carol Barnhart, Inc. v. Econ. CoverCorp., 773 F.2d 411, 414 (2d Cir. 1985) (citations omitted).Furthermore, "where other evidence in the record casts doubton the question, validity will not be assumed." DurhamIndus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980).

Peters Letter at 22 (quoting Dist. Ct. Op. at *17). "Thus," the

Register concludes, "all that the statutory presumptions flowing from

the certificates of registration do is to shift the burden of going

22Although "'the Copyright Office has no authority to giveopinions or define legal terms,'" Morris v. Business Concepts, Inc.,283 F.3d 502, 505 (2d Cir. 2002) (quoting Bartok v. Boosey & Hawkes,Inc., 523 F.2d 941, 946-47 (2d Cir. 1975), we have sometimes found theOffice's views "persuasive," id.

23ERB's evidence also sufficed to rebut whatever presumption arosefrom the Hogarth's renewal term application for Tarzan of the Apes,even if that presumption was not already dissipated by the filing ofERB's conflicting renewal term application. See Martha Graham Schooland Dance Foundation, Inc. v. Martha Graham Center of ContemporaryDance, Inc., 224 F. Supp. 2d 567, 586-87 (S.D.N.Y. 2002); NBCSubsidiary, Inc. v. Broadcast Information Services, Inc., 717 F. Supp.1449, 1451 (D. Colo. 1988).

-35-

forward." Id. at 23. We agree.22 See Langman Fabrics v. Graff

Californiawear, Inc., 160 F.3d 106, 111 (2d Cir. 1998).

In the pending case, ERB has adequately discharged its burden of

rebutting the presumption to be accorded the facts reflected in the

original registrations. On the facts as found by the District Court

and under this Circuit's case law applicable to those facts, the Books

are works for hire. ERB is legally regarded as the "author" entitled

to both the original and the renewal terms.23

We acknowledge that we are disturbed that a corporation as

sophisticated in the protection of its copyrights as ERB did not

correct the registrations for the Books to identify them as works for

hire until 26 and 23 years, respectively, after the initial

registrations. It is even more perplexing that Marion Burroughs, an

officer of ERB and the daughter-in-law of Edgar Rice Burroughs, would

file an application for a supplementary registration for Tarzan of the

Apes in 1979 that only corrected the misspelling "Edgard" and added

Edgar Rice Burroughs as author of original text, but left Burne Hogarth

24Perhaps, in considering the registrations for the Books, BurneHogarth shared the view expressed by counsel for the Hogarths duringthis litigation that, when confronted with the original termregistrations for the Hogarth comic strips, which are conceded to beworks for hire yet identified Hogarth as "author," he inferred that theword "author" was being used, not as a "legal conclusion," but"colloquially."

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identified as the author of the work with no indication that ERB

claimed to be the proprietor of a work for hire. However, as we noted

in rejecting the Hogarths' laches contention, there is no evidence of

prejudicial reliance by Burne Hogarth or his heirs on the lack of work-

for-hire identification before 1999, nor is there any basis for

rejecting the District Court's well supported conclusion that the Books

are works for hire.24

II. Contract Claims

The Hogarths' two contract claims merit no discussion beyond the

analysis provided by the District Court. Concerning the claim for a

portion of the payment ERB received from Disney, Judge Cote properly

concluded that ERB did not license to Disney any rights in the

copyrightable material in the Books, Dist. Ct. Op. at *25-*27, and

that, even if that had occurred, the 1970 Agreement gave Burne Hogarth

no entitlement to any portion of the Disney payments, id. at *28-*29.

As to the claim that ERB's failure to build a museum to house the

Tarzan artwork breached the 1970 Agreement and entitled the Hogarths

to return of the original artwork for the 1972 book, Judge Cote

properly concluded that ERB was not obligated to build the museum, and

that the artwork had been correctly distributed pursuant to the 1970

Agreement. Id. at *29.

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Conclusion

The judgment of the District Court is affirmed. Although, as we

have noted, the incorrect identification of the author in the original

registrations and ERB's long delay in correcting those registrations

are not grounds for disturbing the District Court's judgment, we

observe that had ERB been more attentive to the filings made on its

behalf, this litigation would in all likelihood have been avoided or

at least substantially reduced in scope. We therefore exercise our

discretion to deny ERB an award of appellate costs. See Fed. R. App.

P. 39(a) (cost provisions apply unless court "orders otherwise").